The Good Earth Corp.v.Donald C. Volk

Trademark Trial and Appeal Board

Jan 11, 1999

No. 91099081 (T.T.A.B. Jan. 11, 1999)

Paper No. 23
ejs/ksk
This Disposition is not
Citable as precedent of the TTAB Jan. 11,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
The Good Earth Corporation
v.
Donald C. Volk
________
Opposition No. 99,081
to application Serial No. 74/455,769
filed on November 9, 1993
________
Rodney F. Page, Peter S. Reichertz, Anthony V. Lupo of Arent
Fox Kintner Plotkin & Kahn for The Good Earth Corporation.
Brian J. Hundertmark of Roberts & Hundertmark for Donald C.
Volk.
________
Before Sams, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
The Good Earth Corporation has opposed the application
of Donald C. Volk to register EARTHBURGER for “vegetable
protein food product in the nature of a hamburger
alternative.”1

1 Application Serial No. 74/455,769, filed November 9, 1993,
based on an asserted bona fide intent to use the mark in
commerce.
Opposition No. 99,081
2
As grounds for opposition, opposer has alleged that
since 1968 it and its predecessors-in-interest have used the
trademark PLANET BURGER in association with a vegetarian
sandwich consisting primarily of vegetables, nuts, seeds,
beans, and spices; that opposer is the owner of the
trademark application Serial No. 74/565,141 and the ensuing
registration for the mark PLANET BURGER for goods in class
30;2 that since 1987 opposer and its predecessors-in-
interest have used the trademark GOOD EARTH BURGER in
association with a hamburger sold in its licensee’s
restaurants; that since 1994 opposer has used the trademark
EARTH BURGER in association with a hamburger sold in one of
its licensee’s restaurants;3 and that applicant’s applied-
for mark EARTHBURGER, if used for applicant’s identified
goods, is likely to cause confusion or mistake or to
deceive.
Applicant has denied the essential allegations of the
notice of opposition.

2 Registration No. 2,031,412, registered on January 21, 1997,
was not pleaded in the original or the amended notice of
opposition. However, the underlying application Serial No.
74/565,141, which was filed on August 24, 1994, was asserted in
the pleadings. Applicant itself made this application of
record, and conceded opposer’s ownership of the registration in
its brief. Therefore, the pleadings are deemed amended to
include Registration No. 2,031,412.
3 In its brief, opposer asserted for the first time that it
owned registrations for various GOOD EARTH marks for restaurant
services and certain food items. They were never pleaded nor
were the registrations made of record, nor do we find that the
issue of likelihood of confusion with regard to these
registrations was tried.
Opposition No. 99,081
3
The record includes the pleadings; the file of the
opposed application; and the testimony, with exhibits, of
opposer’s witness Louise Veninga. In addition, opposer has
made of record by notice of reliance copies of applicant’s
answers to interrogatories nos. 1, 4, 7, and 15 of opposer’s
first set of interrogatories; and a copy of the dictionary
definition of the word EARTH from Webster’s New Riverside
University Dictionary (1994). Also, applicant has made of
record by notice of reliance opposer’s answers to
interrogatories nos. 5 and 6 of applicant’s first set of
interrogatories and opposer’s answer to interrogatory no. 7
of applicant’s second set of interrogatories.
Applicant also submitted, under a notice of reliance,
opposer’s responses to document requests nos. 1 and 7 of
applicant’s first set of requests for production of
documents, which consist of copies of the contents of the
filewrapper for opposer’s application Serial No. 74/565,141
and a commercial search report for the mark PLANET BURGER.
Documents produced in response to a request for production
may not be made of record pursuant to a notice of reliance
unless they are otherwise admissible under the provisions of
Rule 2.122(e). See 37 CFR †2.120(j)(ii). However, because
opposer has treated the materials as of record (and because
the filewrapper is in any event admissible as an official
Opposition No. 99,081
4
record under Rule 2.122(e)), the Board deems them to have
been stipulated into the record.
The parties have fully briefed the case; an oral
hearing was not requested.
The record shows that from the late 1960’s to 1994
opposer’s predecessor-in-interest operated, through
franchisees, restaurants under the mark THE GOOD EARTH. In
1994, opposer purchased that business and now licenses use
of its trademarks in connection with restaurants and menu
items in several states, including California, Arizona and
Nevada. Among the marks licensed by opposer are PLANET
BURGER for use in connection with a vegetarian sandwich sold
in its licensees’ restaurants and GOOD EARTH BURGER and
EARTH BURGER for use in connection with hamburger sandwiches
offered in a restaurant operated by one of its licensees.
Opposer and its predecessor-in-interest have used the mark
PLANET BURGER since 1968, the mark GOOD EARTH BURGER since
1987 and the mark EARTH BURGER since 1994. Opposer’s
licensees advertise their restaurants and menu items in
local newspapers, such as the Report in Ontario-Upland,
California and the Progress Bulletin in Pomona, California.
The record shows that applicant is located in Ohio and
has applied for registration of the mark EARTHBURGER for use
in connection with a vegetarian sandwich. Applicant has not
furnished any evidence regarding its business or activities
Opposition No. 99,081
5
under the mark, which we note has been applied for under the
provisions of Section 1(b) of the Act. However, applicant
indicated in its response to interrogatory no. 1 that it
intends to use the mark in “retail restaurant locations open
to the general public.”
We will discuss the question of likelihood of confusion
with respect to each pleaded mark separately.
First, with regard to opposer’s mark EARTH BURGER, we
note that opposer does not have a registration for this
mark. Accordingly, opposer must establish, in order to
succeed on a claim of likelihood of confusion, priority of
use. In that regard, opposer has not shown use prior to
applicant’s filing date of November 9, 1993. The filing
date of applicant’s intent-to-use application serves as
applicant’s constructive use date. Therefore, applicant’s
application is superior in right to opposer’s use which
occurred subsequent to applicant’s filing date. Zirco Corp.
v. American Telephone and Telegraph Co., 21 USPQ2d 1542
(TTAB 1991). Because opposer has failed to establish
priority of use, it cannot prevail, and we need not reach
the question of likelihood of confusion concerning opposer’s
mark EARTH BURGER.
Turning now to opposer’s claims regarding its mark
PLANET BURGER, priority is not in issue in view of opposer’s
registration for the mark PLANET BURGER for a “vegetarian
Opposition No. 99,081
6
sandwich consisting primarily of vegetables, nuts, seeds,
beans, and spices.” Moreover, the evidence shows that
opposer has used its PLANET BURGER mark in connection with a
vegetarian sandwich since prior to November 9, 1993, the
filing date of applicant’s intent-to-use application which,
because applicant has not furnished any evidence of use of
its mark, is the earliest date on which it is entitled to
rely.4
With respect to the issue of likelihood of confusion
between PLANET BURGER and EARTHBURGER, there is no question
that the vegetable protein hamburger alternative identified
in applicant’s application must be deemed to be closely
related to opposer’s vegetarian sandwich consisting
primarily of vegetables, nuts, seeds, beans, and spices. In
fact, the record shows that opposer’s sandwich is a
vegetarian hamburger sandwich. Obviously, applicant’s
hamburger alternative could be served as a sandwich. In
this regard we note that applicant’s original identification
of goods in its application was for a “vegetarian burger.”
Further, as these goods are identified in their
respective application and registration, they are not

4 We reject applicant’s argument that opposer has not shown
continuous use. Aside from the fact that opposer has a
registration for the mark, the proper question is whether
opposer has previously used its mark and not abandoned it. See
West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122,
31 USPQ2d 1660 (Fed. Cir. 1994). Applicant neither pleaded that
opposer had abandoned its PLANET BURGER marks nor was this issue
tried.
Opposition No. 99,081
7
limited as to channels of trade. See Glamorene Products
Corp. v. Procter & Gamble Co., 538 F.2d 894, 190 USPQ 543
(CCPA 1976). Therefore, although applicant argues that the
sandwiches would be sold only in the parties’ respective
restaurants, and that as a result confusion would not be
likely to result, in determining the question of likelihood
of confusion, we must deem the goods to travel in all normal
channels of trade. This would include supermarkets and
other food stores, where the goods might well be displayed
in close proximity to each other. See CBS, Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983). Moreover,
because both opposer’s and applicant’s goods are similar
vegetarian products, they are likely to be purchased by the
same class of consumers.
As for the marks, they are similar in construction and
connotation. Each contains the identical word “BURGER,”
preceded by terms that have a similar connotation in the
context of their goods, i.e., the word PLANET as used in
opposer’s mark connotes the earth. Accordingly, PLANET
BURGER and EARTHBURGER, taken as a whole, convey similar
commercial impressions.
Applicant argues that the word EARTH has another
meaning outside of the planetary meaning, namely, soil.
However, we are not persuaded that, as used for a food item,
consumers would view EARTHBURGER as a soil burger.
Opposition No. 99,081
8
On the contrary, both PLANET and EARTH, used in
connection with vegetarian burgers, present a commercial
impression of being “green,” that is, environmentally pure
and healthful for the consumer. This commercial impression
stands in contrast to the handful of third-party
registrations for “PLANET” marks appearing in opposer’s
search report where the term PLANET is used in connection
with restaurant services or food items that do not fall into
the category of “health food.”
In view of the similarity of the goods, the marks, the
channels of trade and the consumers, we find a likelihood of
confusion between the marks PLANET BURGER and EARTHBURGER.
This brings us to a consideration of whether
applicant’s use of EARTHBURGER is likely to cause confusion
with opposer’s use of GOOD EARTH BURGER. Opposer does not
have a registration for this mark and, therefore, must rely
on its common law rights. The evidence shows that opposer
has used its GOOD EARTH BURGER mark in connection with a
hamburger sandwich since 1987. Opposer’s use precedes the
November 9, 1993, filing date of applicant’s intent-to-use
application; therefore, opposer has established priority of
use.
GOOD EARTH BURGER is used by opposer as the name of a
menu item in opposer’s GOOD EARTH restaurants. While the
goods are related, in that opposer’s product is a hamburger
Opposition No. 99,081
9
sandwich and applicant’s vegetarian hamburger alternative
may also be used for a sandwich, there are also clear
differences in the goods. Specifically, opposer uses its
mark for a meat sandwich, while applicant’s is vegetarian.
In addition, the parties’ products will not be sold in
the same places. Opposer’s GOOD EARTH BURGER hamburger
sandwich is sold only in its licensees’ restaurants. As
noted above, opposer’s rights derive only from its common
law use and, therefore, its channels of trade are limited to
its own GOOD EARTH restaurants. Although applicant’s
channels of trade have not been restricted, opposer cannot
assert that it will sell applicant’s vegetarian burger in
opposer’s restaurants. Opposer cannot prevail on a claim of
likelihood of confusion by deliberately causing confusion by
its own actions.
Nor do we believe that confusion is likely if applicant
were to sell its vegetarian burger in supermarkets. Unlike
the case with opposer’s PLANET BURGER registration,
opposer’s channel of trade is limited to its own
restaurants; we cannot presume close proximity of use in
supermarkets. Further, because of the differences in the
goods and the marks, consumers who encounter EARTHBURGER
vegetarian burgers in a supermarket are unlikely to think
they emanate from the same source as GOOD EARTH BURGER
hamburger sandwiches sold in GOOD EARTH restaurants.
Opposition No. 99,081
10
With respect to the marks, while they share the
elements EARTH and BURGER, the mark GOOD EARTH BURGER used
in connection with a traditional meat hamburger does not
carry the “green” connotation that is imbued in applicant’s
mark EARTHBURGER used in connection with a vegetarian
burger. This dissimilarity in connotation of opposer’s mark
GOOD EARTH BURGER along with the additional element “GOOD”
presents a different commercial impression from applicant’s
mark EARTHBURGER.
In reaching this conclusion, we have considered
opposer’s argument that its mark GOOD EARTH BURGER is well
known and thus should receive broad protection. In support
of this argument opposer has submitted two advertisements
from local papers displaying the mark GOOD EARTH BURGER in
connection with opposer’s menu items; one article in the
Pomona, California Progress-Bulletin mentioning opposer’s
mark GOOD EARTH BURGER; and the statement by opposer’s
secretary/treasurer and vice president, Louise Veninga, that
the majority of opposer’s licensees’ restaurants have the
mark GOOD EARTH BURGER on their menus, and that
approximately 2000 people frequent the restaurants daily.
Opposer did not provide any evidence as to sales or
advertising for GOOD EARTH BURGER hamburger sandwiches.
Based on the evidence of record, we cannot find that opposer
Opposition No. 99,081
11
has established that the mark GOOD EARTH BURGER is well
known.
Opposer has also argued that applicant, by adopting the
mark EARTHBURGER, intended to trade upon opposer’s goodwill.
In support thereof, opposer has asserted that its mark is
well known. As discussed above, opposer has not established
that its mark is well known. Moreover, there is no evidence
that applicant was even aware of opposer’s use of GOOD EARTH
BURGER. In this connection, we note that applicant is
located in Ohio while opposer has had restaurants in
California, Nevada, Arizona, Oregon and Florida.
Accordingly, opposer has failed to prove likelihood of
confusion with respect to its mark GOOD EARTH BURGER.
Decision: The opposition is sustained on the basis
that applicant’s mark EARTHBURGER is likely to cause
confusion with opposer’s mark PLANET BURGER.
J. D. Sams
E. J. Seeherman
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board